Appeal No. 1998-2288
Application 08/600,150
The claimed subject matter should be analyzed for
definiteness under the second paragraph of section 112 and
then compliance with the first paragraph before the scope of
the claimed subject matter can be compared to the applied
prior art references in an analysis under 35 U.S.C. § 103.
See In re Angstadt, 537 F.2d 498, 501, 190 USPQ 214, 217 (CCPA
1976), citing In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236,
238 (CCPA 1971).
“The legal standard for definiteness [under section 112,
¶2] is whether a claim reasonably apprises those of skill in
the art of its scope. [Citations omitted].” In re Warmerdam,
33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759 (Fed. Cir. 1994).
“[T]he definiteness of the language employed must be analyzed
- not in a vacuum, but always in light of the teachings of the
prior art and of the particular application disclosure as it
would be interpreted by one possessing the ordinary level of
skill in the pertinent art.” Angstadt, supra; Moore; supra.
The examiner rejects claims 52, 58, 74, 76 and 78 under
the second paragraph of section 112 because the term “dye” is
indefinite and confusing since the examiner does not realize
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